WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LO 337 IP Holdings, LLC v. Threy Person / Bureaumucho
Case No. D2014-1129
1. The Parties
The Complainant is LO 337 IP Holdings, LLC of Los Angeles, California, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Threy Person / Bureaumucho of Spijkenisse, The Netherlands.
2. The Domain Name and Registrar
The disputed domain name <worldstartwerking.com> is registered with PSI-USA, Inc. dba Domain Robot (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 30, 2014. On July 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2014, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name was not registered in the name of the Respondent and providing contact details for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) the disputed domain name was registered on September 15, 2013;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to the disputed domain name.
The Center sought further clarification of the reply from the Registrar by email dated July 8, 2014. On July 10, 2014, the Registrar clarified that the Respondent was in fact the registrant of the disputed domain name and the contact details were correct.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 4, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 13, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On August 13, 2014, following the appointment of the Panel, the email address for the Respondent given in the WhoIs information was used to provide a statement that the Respondent had removed all content from the website to which the disputed domain name resolved.
Due to unforeseen circumstances, the Panel issued Procedural Order No. 1 extending the projected date for submission of the decision to September 2, 2014.
4. Factual Background
The Complainant was established in 2005. It provides online entertainment content, news and videos, particularly in the hip hop genre and culture and including adult themed entertainment photos and videos for nearly a decade. It has a number of websites operating through domain names such as <worldstar hiphop.com>, <worldstarmatch.com>, <worldstarcandy.com>, <worldstarhoneys.com> and <worldstarcandylive.com>. Before one can enter a number of these sites, one must click a "button" confirming adult age.
According to the Complaint, the Complainant's <worldstarhiphop.com> website attracts over 70 millions visits per month or between 2 and 3 million visits per day. As a result, the Complaint claims it outranks websites such as <oprah.com>, <cbs.com>, <mtv.com> in terms of volume of internet traffic.
In addition to its usage of "Worldstar", the Complainant has a number of trademark registrations including:
- USA Registration No. 4,000,717, WORLD STAR HIP HOP for a range of entertainment services in International Class 41 which was registered on July 26, 2011, claiming a first use in commerce on August 10, 2005;
- USA Registration No. 4,280,316, WORLD STAR HIP HOP for a range of goods in International Classes 14 (jewellery etc.) and 25 (clothing etc.) and advertising and directory services in International Class 35 which was registered on January 22, 2013, claiming a first use in commerce at least as early as January 2008;
- USA Registration No. 4,163,310, WORLD STAR CANDY for a range of entertainment services in International Class 41 which was registered on June 26, 2012, claiming a first use in commerce on April 24, 2010.
The disputed domain name was registered on September 15, 2013.
Until the Complaint was filed, the disputed domain name resolved to a website of a decidedly "adult" nature: featuring scantily clad women "twerking", which is apparently a form of dancing in a sexually explicit manner involving thrusting hip movements and a low squatting stance.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Although the Respondent has not provided a formal response, the Panel is satisfied that the Complaint has been properly served on the Respondent in accordance with paragraph 2(a) of the Rules and he has been given a fair opportunity to present his case within the terms of the Policy.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the three registered trademarks referred to in section 4 above: two for WORLD STAR HIP HOP and one for WORLD STAR CANDY. The Panel notes the claims of common law reputation made in the Complaint. The Panel has been able to verify that there are indeed websites at the domain names the Complainant has identified in the Complaint (apart from, perhaps, <worldstarcandylive.com> which timed out).
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant's proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, it is permissible in the present circumstances to disregard the ".com" component of the disputed domain name as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252.
The disputed domain name differs from the Complainant's registered trademarks in that it does not include "Hip Hop" or "Candy" or the spaces between the words in the Complainant's trademarks. The disputed domain name also includes "twerking" which, as noted above, is apparently a descriptive term. "World Star" itself might be thought to be a descriptive or laudatory term. It is, however, part of the Complainant's registered trademarks. The disputed domain name takes the same format as the Complainant's registered trademarks: "World Star" plus a descriptive or otherwise ordinary expression. Given the subject matter of "twerking", the Panel can readily foresee that internet users would be likely to think there was an association of some sort between the registrant of the disputed domain name and the Complainant. The potential for that association is only increased by the "adult" entertainment nature of many of the Complainant's websites.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The disputed domain name is plainly not derived from the Respondent's name, nor has he made any claim to be commonly known by or as "World Star". In his informal response, the Respondent also did not claim any trademark rights of his own.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. To the contrary, the website to which the disputed domain name resolved before it was taken down included a disclaimer of any association with or endorsement by "Worldstarhiphop".
The Complainant claims that the disputed domain name and the content of the Respondent's website seek to take advantage of the Complainant's trademarks and reputation. According to the Complainant, the Respondent's website included a video, "Kara Chase Vine's Ultimate Twerker", which the Complainant claims to be the owner of the copyright of. The Complainant states that, as with the disputed domain name, it has not authorized the Respondent to include this video on his website. This video is presented as a "WSHH Feature". It is also noteworthy that the Respondent registered the disputed domain name long after the Complainant's use of its trademarks started.
In the Panel's view, the evidence supplied by the Complainant provides a strong inference that the Respondent did register the disputed domain name and is using it to take advantage of it for its trademark significance representing some form of association with the Complainant or its websites such as "World Star Hip Hop" and "World Star Candy". Such use does not constitute a bona fide offering of goods or services under the Policy.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Having regard to the content of the website which the disputed domain name resolved to and the use of the Complainant's copyright video without permission, the Panel finds that the disputed domain name has been used in bad faith. Given the short period since the disputed domain name was registered and, so far as the Wayback Machine reveals, the presence of the Kara Chase Vine video on the site from the earliest days, the Panel readily infers that the disputed domain name was registered to take advantage of the Complainant's trademarks and reputation. As that was done without permission, the disputed domain name was registered in bad faith also.
Accordingly, this requirement of the Policy has also been established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <worldstartwerking.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: September 1, 2014